Posts Tagged: "inter partes review"

October 30th was a very busy day for amici filing briefs with the U.S. Supreme Court on how the highest court in the nation should decide in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, a case in which oral arguments will be heard on November 27th. Many of the briefs filed on the 30th were submitted by some of the biggest names in the tech industry. Taking a look at briefs filed by this major companies, some of whom have been seeing great success in patent validity trials at the Patent Trial and Appeal Board (PTAB), it’s both revealing and unsurprising to find how the tech ruling class feels that the Supreme Court should decide in Oil States.

A review of amici briefs filed with the U.S. Supreme Court in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC provides evidence of a stark split in how various stakeholders in the U.S. patent system view the patent validity challenge activities ongoing at the Patent Trial and Appeal Board (PTAB). Whereas many of the world’s largest tech companies who have a dominant advantage in the consumer marketplace are in favor of the PTAB remaining active, many small entities and individual inventors are greatly opposed to the PTAB and its differing standards on patent validity leading to a higher rate of invalidation than in Article III district court proceedings. A look at amici briefs coming from law professors can shed some light on where the academic sector comes down on the subject of the PTAB’s constitutionality.

The government’s brief argues that IPR proceedings at the PTAB are consistent with Article III because, in its view, patents are public rights and not private ones and the right for an inventor to seek a patent is a public right. In the government’s eyes, it is constitutionally permissible for the U.S. Patent and Trademark Office to reassess previously issued patents for revoking in order to “correct its own errors.” If the PTAB errs, then patent owners have legal recourse in appealing those cases to the Court of Appeals for the Federal Circuit, the government argues.

A review of amicus briefs filed with the U.S. Supreme Court in advance of oral arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC revealed that, by and large, the American tech ruling class wishes to see SCOTUS leave the Patent Trial and Appeal Board (PTAB) intact in the face of the constitutional challenges facing the PTAB in the case. Today, we’ll review a series of briefs filed by amici representing many of the smaller players in the U.S. patent system who have by and large been railroaded at the PTAB, an agency which invalidates patents at an incredibly high rate, fails to follow Congressional statutes regulating its own activities and stacks administrative patent judge (APJ) panels to achieve policy objectives desired by the Director of the U.S. Patent and Trademark Office.

Is a patent a property right? It certainly has been considered so for over 200 years. If it is a property right, to invalidate it should require an Article III (judicial) court with all the normal due process required to invalidate property right… The US Supreme Court will look at these issues when it deliberates Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, starting Monday morning, November 27th. US Inventor, the premier non-profit fighting for inventors’ rights, will be staging a demonstration to bring attention to the issue. You have the unique opportunity to come and be a part of history as we make our voices heard.

In two final decisions and five decisions on IPR institution, the PTAB panel of administrative patent judges (APJs) found that petitioners Apple and AT&T did not meet the required burden of proof to invalidate two VoIP-Pal patents. In the final written decisions, Apple and AT&T failed to prove invalidity of the challenged claims by a preponderance of the evidence. Similarly, the PTAB found that neither party had shown a reasonable likelihood of invalidity at the institution stage in the other cases. Along with last November’s denial of an IPR petition filed by Unified Patents, the VoIP-Pal patents have been unscathed through a total of eight IPR petitions.

Luckily for Apple and Microsoft, however, VirnetX did not assert the ‘135 patent against Mangrove Partners, a hedge fund, which filed a petition for IPR against the ‘135 patent on April 14th, 2015; Mangrove reportedly shorted VirnetX stock around this time. On October 7th, 2015, the PTAB panel adjudicating the case decided to institute the IPR as the petitioner Mangrove had demonstrated a reasonable likelihood of proving invalidity of the challenged claims. Then in January 2016, Apple was successful in having its petition for IPR review of the challenged ‘135 claims joined to Mangrove’s IPR. VirnetX had objected to Apple’s motion for joinder based on the Section 315(b) language but the PTAB found that Section 315(b) did not apply to joinder motions which are governed by 35 U.S.C. § 315(c).

The United States Supreme Court will hear oral arguments in SAS Institute v. Matal on Monday, November 27, 2017. This case will give the Supreme Court the opportunity to declare whether the Patent Trial and Appeal Board must issue a written decision covering all claims challenged in an inter partes review proceeding. In advance of this much anticipated hearing, I reached out to a number of industry insiders with a simple question: What are you thoughts and predictions on SAS Institute in advance of Supreme Court oral arguments? Their answers follow.

The United States Supreme Court will hear oral arguments in Oil States v. Greene’s Energy Group on Monday, November 27, 2017. This case will give the Supreme Court its first opportunity to address the constitutionality of the inter partes review procedures created by the America Invents Act (AIA). In advance of this much anticipated hearing, I reached out to a number of industry insiders with a simple question: What are you thoughts and predictions on Oil States in advance of Supreme Court oral arguments? Their answers follow… As for my thoughts — I’m going to go out on a limb this time with my prediction that the Supreme Court will find IPRs unconstitutional.

Oil States Energy Services LLC v. Greene’s Energy Group, LLC, now scheduled for oral argument before the Supreme Court on November 27, is clearly receiving all the attention this fall. The possibility of finding Patent Trial and Appeal Board (PTAB) post grant proceedings unconstitutional cannot be understated. But oral arguments will also be heard on that same day in the less-noticed SAS Institute v. Matal… Should any form of IPRs survive Oil States, the following SAS Institute decision should be watched with equal anticipation. A reversal in SAS Institute will no doubt have you rethinking your PTAB strategy.

Owens Corning v. Fast Felt (Fed. Cir. 2017) illustrates an example of how the broadest reasonable interpretation (BRI) standard increases the chances that an obviousness argument could successfully invalidate a patent claim during a post grant patent review proceeding; and make it more difficult to overcome an obviousness rejection during patent prosecution. It also illustrates how broadening a claimed invention’s field of use could be detrimental to the claim’s validity and make it harder to overcome an obviousness rejection. 

The TC Heartland decision follows the trend of eroding patent holder rights due to the potential for infringers to more easily move the lawsuit to a more favorable forum and in some cases have the issues of infringement and discovery for same stayed for a year or more.  As patents and mechanisms to enforce patents become weaker, the high-tech economy of Northern California will begin to diminish as foreign companies encounter fewer obstacles in their way to compete against companies with weaker IP rights… Because so much hinges on a stay motion in modern patent litigation cases, this predominant statistic influences where plaintiffs should consider filing their patent complaint.

U.S. Inventor, the nationwide inventor advocacy organization representing over 13,000 members, including, individual inventors, university research institutions, patent holders and intellectual property dependent start-up businesses, today announced that its members will stage a protest in front of the U.S. Supreme Court on November 27th during oral arguments in the case of Oil States Energy Services, LLC v Greene’s Energy Group, LLC.

Only Article III courts can provide a fair, neutral and unbiased forum for assessment of patent validity. For over two hundred years, patent validity, patent infringement and patent damages have been consolidated to be heard in federal district courts. Federal courts supply impartial judges that are immune from influence by the executive or legislative branches. Furthermore, federal courts supply jury trials that enable a fair application of due process rights in the hearing of a patent dispute. Patent validity review is only a single component of patent infringement cases and it is efficient to have this component of the matter reviewed in a single matter.

In Owens Corning v. Fast Felt Corp, Fast Felt sued Owens Corning for infringement, and Owens Corning filed a petition with the PTO seeking inter partes review of claims 1, 2, 4, 6, and 7. All of the challenged claims contain the term “roofing or building cover material.” Owens Corning argued that the claims are obvious over Lassiter, Hefele, and Eaton. The Board concluded that Owens Corning failed to show obviousness of any of the challenged claims… While the preferred embodiment of a claim might focus on a particular element of the claim, this is not enough to narrow the claim scope of the IPR. The Board must still give the claim its broadest reasonable interpretation in light of the specification. Where the record and a correct claim construction support only one result, reversal is warranted, without need for remand.